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The aforementioned decisions show how awkwardly the CIRA dispute resolution framework functions when applied to a new situation: a complaint based on the bad faith use of a personal name as a domain name. The (CDRP) typically contemplates complaints based on financial interests rooted in valid trade-mark rights, not simply in the valid personal interests of complainants. This situation is unfortunate, as these types of proceedings may become more frequent in the future.

Background: Revenge on the Internet

The two decisions, heard together, involve two Complainants - a working in Client Relations at Manulife Financial Affinity Markets��and��acting as General Counsel for the same company - and a single Registrant,��a former customer of the Complainants’ employer.

The Registrant (who took no part in the proceedings) was unhappy with certain decisions made by Manulife which may have cost him money. In response to his dissatisfaction with the company, and with the Vice President in particular, he registered the Vice President’s personal name as a domain name, and threatened to use the domain to harm the Complainant’s reputation.

At the time of the complaint, the domain name had resolved to a website which displayed pornographic images. The Registrant also allegedly promised to drop by the Vice President’s home to discuss the matter, and made other comments which were described by the Panelist as “threats” which “had a personal tone.”

In response,��the lawyer working for Manulife sent the dissatisfied customer an email addressing the registration of the domain name and��advising him that a visit to the Vice President’s house would be treated as a trespass. The issue was not resolved, and the Registrant soon registered another domain name, this time using the personal name of the lawyer. He threatened to provide personal information about her and her family on the new website.

The email exchanges between the Registrant and the lawyer, while not publicly available, were described by the Panel as “angry and condescending.” Exchanges between the lawyer and the dissatisfied customer apparently included statements by the customer that the Internet was a “dangerous place,” and carried the implication that information included on the website about the lawyer and her children could cause them harm.

Both the General Counsel and the Vice President filed complaints against the former customer on 13 November 2013, seeking to have the domain name transferred to avoid further threats and potential damage to their reputations.

The Policy, the Law and the Problem of Personal Names

The (CDRP) can allow for the transfer of ownership of a domain name registration under paragraph 3.1 where

1. The Registrant’s dot-ca domain name is confusingly similar to a Mark in which the complainant had Rights prior to the date of registration of the domain name and continues to have such Rights;
2. The Registrant has no legitimate interest in the domain name (as described in the CDRP); and
3. The Registrant has registered the domain name in bad faith (also as described in the CDRP)
   
   

The term “Mark” also has a specific definition under paragraph 3.2 of the CDRP. This definition closely tracks definitions in ss. 2 and 4 of the Trade-marks Act (), in that it requires that the Mark be used for the purpose of distinguishing one’s goods and services from those of another.

Both the CDRP and the Trade-marks Act are concerned about preserving the use of one’s personal name from protection, in order to enable people to honestly conduct business under their actual names. However, both the Act and the CDRP address this defensively:

• The Trade-mark Act provides that a Mark is not registrable if it is primarily merely the name or surname of an individual who is��living or who has died within thirty years of an application (under ).
• The CDRP protects the ability of Registrants to operate websites under their own name in subparagraph 3.1(b), where the personal name of the Registrant constitutes a “legitimate interest” under subparagraph 3.4(e).
  
  

Neither the CDRP nor the Trade-marks Act recognize a form of rights which arise from one’s personal name outside the use of that name for the purpose of distinguishing one’s goods and services from another. Essentially, the CDRP lays out a procedure for protecting the commercial interests of trade-marks or trade names, and minimizes those protections where the Registrant of a domain name operates a website that is, in fact, his or her name (or a name by which he or she is commonly known).

Under the CDRP, as under the Trade-marks Act, a personal name can be used to block or reduce the scope of protection afforded to a Mark, but cannot necessarily be used as a sufficient basis to give rise to trade-mark-like rights on its own. To establish rights, the crucial factor is the presence of distinctiveness in the context of commercial activity, not the legal name of persons involved in a proceeding.

Solving the Problem Using the CDRP

The approach taken by the CDRP and the Trade-marks Act leads to a problem. In order to obtain relief under the CDRP, a person whose name has been registered in bad faith as a domain must prove that his or her name is a “Mark” using the same kind of evidence and reasoning that he or she would use to prevent his or her name from becoming a “Mark” under the Trade-marks Act.

The CDRP was not written to protect the personal or reputational interests Complainants may have in registered domain names. Even though this problem may be an issue which needs to be addressed, and which poses a substantial problem that should be resolved��in the interests of public policy, the situation which the CDRP was meant to address is in fact more narrow. The CDRP protects the valid commercial interests of firms or people operating under a distinctive name. It does not explicitly protect other valid, personal interests individuals may have in registered domain names.

The panel reasoned around this problem by positing that certain kinds of professionals use their personal names in the promotion of their services, and as the professionals in question have promoted their services under this personal name, that name has effectively acquired distinctiveness. In this manner, “professionals treat personal names as trade names or trade-marks.” Thus, the decision of the panel seems to closely track a “acquired distinctiveness” argument for allowing a mark which is barred from registration under s 12(1)(a) and (b).

Problems for the Future

Here, it would have been unacceptable to the Panelist (and most likely to the public at large) to allow the Registrant to continue abusing the domain name system in this manner. However, the Panelist was confined within the parameters of a policy that was ill-equipped to solve disputes of such a��personal��nature. Using the restrictive definitions of the CDRP, the Panelist achieved the best outcome by avoiding the deficiencies of the CDRP entirely, and holding that the Complainants had common law trade-mark rights in their personal names. Yet the decision shows that the policy itself contains a major flaw, and the workaround may have unintended consequences in the future.

For instance, if a private individual is not part of a professional class in which a member uses his or her name to promote a service, does that mean this person cannot use the CDRP to transfer a domain name registered in bad faith for the purpose of spreading sensitive, personal information about that individual on the Internet?

In addition, if a Registrant provides evidence that a large number of professionals share a name with a complainant, would this mean that the complainant cannot prevent the bad faith registrant from maintaining control of the domain name and continuing to operate a hate site, since for that professional the name lacks sufficient distinctiveness?

Libel laws and privacy laws may help fill in some of the gaps, but unlike the administrative proceedings offered by CIRA, civil actions are often prohibitively expensive for private individuals. Ultimately, the new realities of the Internet era show that the CDRP may have been too narrowly drafted – and there are legitimate needs which the policy may not address.

David Bowden is an IPilogue editor and a JD Candidate at Osgoode Hall Law School.

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For those interested in domestic trade-mark practice, the decision demonstrates that the Federal Court is willing to take a broad approach to the term “interested person” in order to facilitate access to relief under the . For those focussed on wider concerns related to global brand management, the decision demonstrates the availability of defensive litigation tactics in the context of a global trade-mark dispute.

The Dispute: Formal Wear vs. Underwear

The action stems from a dispute in the UK between Thomas Pink Limited and a UK affiliate of Victoria’s Secret Stores Brand Management Inc, in which Thomas Pink sued the lingerie retailer for trade-mark infringement. Both stores use a stylized, block-letter version of the word “PINK” in association with their goods and services. However, whereas Thomas Pink largely focuses on formal shirts for men and women, Victoria’s Secret is best known for women’s clothing and undergarments (many with the word “PINK” festooned on the seat of said articles of clothing).

The two brands coexisted for several years until Thomas Pink filed a claim in 2013 with the UK in which it alleged that the use of the stylized PINK logo by the defendant was likely to cause consumer confusion. The statement of claim, according to the Federal Court of Canada, referred to the use of the word “Pink” by affiliates in the USA and Canada.

A previous Trade-Marks Office examiner in Canada had also expressed an opinion that confusion was likely between two of the parties’ marks, in particular Victoria’s Secret's application for a stylized PINK mark (App No ) and an existing registration held by Thomas Pink for its stylized PINK mark (Reg No: ).

Fearing liability in these jurisdictions, Victoria’s Secret sought declaratory judgments in both Canada and the USA (the Statement of Claim for the US action, filed in the Southern District of Ohio Eastern Division, can be found ).

“Interested Persons” and the Catch-all Provision of the Trade-marks Act

The Trade-marks Act does not provide for a specific procedure to be followed for an application for declaratory judgment of rights conferred through registration. The Act instead provides for a general power to grant relief under��:

Where a court is satisfied, on application of any interested person, that any act has been done contrary to this Act, the court may make any order that it considers appropriate in the circumstances, including an order providing for relief by way of injunction and the recovery of damages or profits and for the destruction, exportation or other disposition of any offending wares, packages, labels and advertising material and of any dies used in connection therewith.

It was through this catch-all provision that the defendant parties, Victoria’s Secret (Canada) Corp. and Victoria's Secret Stores Brand Management, were able to ground a proceeding on the basis that they qualified as “interested persons” under the Act. The term “person interested” is defined in s. 2 of the Act, and includes “any person who is affected or reasonably apprehends that he may be affected by any entry in the register, or by any act or omission…under or contrary to this Act”. Most jurisprudence on the term involves of the Act, which provides for an application to the Federal Court for an order that the register be struck or amended. Given that the term “interested persons” differs from the defined term in the Act and the term used in s. 57, it was an open question whether or not the different terminology should be afforded a different interpretation; the Court decided it should not.

The decision to interpret “interested person” broadly fell on two general principles. First, citing the Federal Court of Appeal’s decision in BBM Canada v Research in Motion Limited, () for the proposition that the Act, and in particular the “Legal Proceedings” provisions is “best met by an interpretation which promotes access to the courts that is as expeditious and proportionate as possible." Second, the Court held that what constitutes a “person interested” depends on the facts of each case. In particular, a “person interested” must demonstrate “a reasonable apprehension that a commercial interest that it has, or may have, may be affected”; and that the threshold for qualifying as an interested person is low.

The court concluded that the low threshold was met by Victoria’s Secret, given the litigation in the UK and a previous report by an examiner which expressed an opinion that confusion may likely exist between the two parties’ marks.

Practice Point: Interested Persons and International Protection

In my opinion, the decision shows that the Federal Court takes a liberal stance on who qualifies as an interested person under the Act. Given that for many large clothing retailers, international commerce is the norm rather than the exception, the decision also shows that certain defensive litigation tactics may successfully be pursued in Canadian courts in the context of trade-mark disputes triggered in foreign jurisdictions.

David Bowden is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

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A Tale of Two Woodpeckers

Two businesses operating in BC allegedly marketed wood flooring products using a trade-mark that contains either an image of a woodpecker or the word "woodpecker" itself. The plaintiff, Woodpecker Hardwood Floors (2000) Inc, has been in the hardwood flooring business since as early as 2000. The defendants, Wiston International Trade Co, Ltd and Wiston Building Materials Co, obtained trade-mark registrations in early 2013 for various logos and word marks including some which use the word “Woodpecker” in association with wares and services involving hardwood floors. The plaintiff, in response to what it viewed as an infringement of its common law trade-mark rights, alleged passing off and sought a declaration of invalidity, as well as an interim injunction.

This situation closely tracks elements in most trade-mark litigation – save for the fact that Woodpecker sought relief in the BC Supreme Court, the provincial court of general jurisdiction. Since the claim involves allegations of invalidity concerning a registered trade-mark, such a claim would at first seem clearly within the Federal Court’s jurisdiction. The fact that an injunction was granted – and upheld on appeal – by BC provincial courts suggests that, in at least one province, whether or not provincial courts can declare trade-mark registrations to be invalid is a serious question to be tried. Related to this issue is whether or not owners of registered trade-marks can be restrained from using their marks by unregistered owners in various provinces.

The “Trump Card” and the Federal View

In Ontario, the Court of Appeal has referred to a trade-mark registration as a “trump card” which gives the owner a full answer to an allegation for passing off. In ([2002] OJ No 2029), the ONCA found that the defendant was entitled to use its registered mark in association with beer, and if a competitor takes exception to that use, “its sole recourse is to attack the validity of the registration” [at para 16].

While the plaintiff in Woodpecker did attack the validity of the defendant’s registration, it did so by seeking a declaration of invalidity in provincial court. This type of attack differs from the interpretation of Molson v Oland offered by the Federal Court in (2010 FC 1099, reversed in part on different grounds) in which Justice de Montigny found that the appropriate remedy for an unregistered owner alleging passing off against the holder of a registration was to “seek the expungement of the infringing trade-mark” [at para 209]. While the Federal Court of Appeal clarified that Molson v Oland only applied to the use of the mark as registered, the decision still seems dispositive in the current case.

Yet the BCCA still confirmed that there is a serious question to be tried. To understand why, one has to look to the language of the Trade-marks Act, the jurisdiction of the Federal Court, and even the division of powers established in .

Jurisdictions, Conflict and the Availability of Relief in Provincial Court

Trade-marks are not explicitly subject to the exclusive legislative authority of the Parliament of Canada under the Constitution Act, 1867, unlike “Patents of Invention and Discovery” and “Copyrights” (, respectively). Instead, federal legislative competence has historically been grounded in the broad section permitting legislation regarding the “Regulation of Trade and Commerce” ().

Parliament’s legislative competence to pass legislation which affects the common law tort of “passing off” was the subject of a direct challenge in , 2005 SCC 65. In Kirkbi, the Supreme Court found that , which codifies the common law civil action of passing off, is sufficiently integrated into the federal trade-mark scheme and therefore constitutional.

However, passing off remains a valid cause of action in provincial courts, who have original jurisdiction with respect to “Property and Civil Rights in the Province” (). Therefore, Parliamentary and provincial authority over trade-marks overlaps between the two jurisdictions.

As a result, potential overlapping jurisdictions can exist between federal and provincial courts where explicitly statutory language does not grant the federal court exclusive jurisdiction. Unfortunately, the Trade-marks Act may not be explicit enough to preclude a declaration of invalidity by a provincial court. The language of grants exclusive original jurisdiction to the Federal Court to order that any entry in the register be struck out or amended on the ground that the entry as it appears on the register does not accurately express or define the rights of the person appearing to be the registered owner of the mark. In addition, grants exclusive original jurisdiction to the Federal Court in any case in which it is sought to have any entry of the register of trade-marks made, expunged, varied or rectified. The subtle distinction drawn by the provincial courts in BC is that a declaration of invalidity is not an order to strike out or amend the register – and therefore does not necessarily fall under the exclusive jurisdiction of the court [see Woodpecker, at para 10].

The Position of the BCCA and its Potential Ramifications

For the interim order, the court concluded that it had the jurisdiction to issue an injunction against the defendants’ use of their registered marks on this basis, as well as jurisdiction flowing from and the inherent jurisdiction of the court. As this appeal involved an interim injunction, it was unnecessary to conclude that the provincial courts in BC did in fact have jurisdiction to make a declaration of invalidity regarding an entry on the Trade-mark Register. The decision simply stands for the proposition that provincial courts in BC still view the effects of registration which were the subject of comment in Molson v Oland and Philip Morris v Marlboro Canada, as well as the effects of to be unsettled matters of law – indicating that they may not interpret the FCA’s interpretation to be binding for the purposes of provincial law.

The issue, if it goes to trial, could have important ramifications. A system of national registration which is subject to inconsistent provincial restrictions could pose obstacles to rights-holders. More importantly, the ability of provincial courts to make differing declarations of invalidity undermines the purpose of a national trade-mark registry, creating gaps in coverage for a system intended to provide an easy method of national protection. In any case, this decision shows that provincial courts are unwilling to limit their jurisdiction without a full hearing on the merits of the case, and that any restrictions imposed on that jurisdiction will not be taken lightly.

David Bowden is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

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2013 ushered in renewed changes to the intellectual property law terrain in Canada and around the world. ��New treaties were formed, legislation was proposed, and cases were decided that will surely have an impact on how scholars view the field and how the law is practised.

Patents

2013 was a busy year for patent law on both the domestic and international fronts.

Following the landmark “Viagra” decision in 2012, Canadian courts continued to develop and clarify the patent law doctrine of sufficient disclosure. ��2013 also saw a number of contentious issues brought before the courts. In particular, these issues included the treatment of selection patents, what constitutes sufficient disclosure, and a clarification of the “promise of the patent” utility analysis. ��Some of these matters were explored in two important cases from the Federal Court and the Federal Court of Appeal ( and , respectively), where the courts clarified the “promise of the patent” doctrine (for an in-depth analysis of those two cases see and ). ��In addition, the Federal Court of Appeal explored the controversial doctrine of sound prediction in , a rare non-pharmaceutical appellate level patent case. loosened the requirements for sufficient disclosure in sound prediction and rejected the premise that the doctrine only applied to certain areas of technology.

2013 also saw the largest ever patent infringement damage award in Canadian history.�� In , the court awarded Merck over $119 million in damages, plus interest, for Apotex’s infringement of Merck’s patent for the anti-cholesterol drug lovastatin. This case is perhaps a signal that patent litigation will continue to be a very important area of focus in the Canadian legal and business sectors.

In the US, the prominent legal battles involving patents owned by Apple continued to rage on, with the United States Court of Appeals for the Federal Circuit rendered by the International Trade Commission in relation to key features of the modern smartphone (i.e. multi-touch functionality and a method of determining if a touch is a “finger touch”).

In the controversial debate around the patent eligibility of isolated gene sequences, the US Supreme Court issued a in the long running Myriad Genetics case that reversed the lower court’s decision and . This decision contrasts with other countries’ approach (such as ) and sets a precedent that will undoubtedly have future .

Canadian patent laws were also the focus of international attention in 2013 due to their influence on transnational trade. In May, a from the Office of the United States Trade Representative (USTR) about Canadian patent laws. This was followed by launched by the pharmaceutical company Eli Lilly, which alleged that Canada breached NAFTA by allowing its courts to invalidate two of its patents. These incidents led to the much anticipated between Canada and the European Union in October. Although the full text of the agreement has not yet been completed and ratified, there are that the agreement is expected to have on Canadian patent law: (1) the addition of up to two years of patent restoration for innovative pharmaceuticals, and; (2) the granting of a “right of appeal” for innovative pharmaceutical companies under the Patented Medicines (Notice of Compliance) Regulations, which is a right that is currently only available for patent challenges from a generic pharmaceutical company. This agreement contains some changes to Canadian patent law, and although the ultimate impact of CETA on intellectual property laws in Canada remain to be seen, the impact will one.

Last, but certainly not least, in a rare landmark patent decision from the developing world, the a pharmaceutical patent owned by Novartis that had been widely upheld internationally. This over the status of intellectual property protection in India and other developing countries, representing a concern for the future of the pharmaceutical industry in these types of economies.

Trade-marks

The past year showcased the importance of the Internet, social media, and global branding in the field of trade-marks. Long viewed as an area of intellectual property limited by its territorial focus, developments in trade-mark law both in Canada and abroad emphasized the importance of global integration for trade-mark value and protection.

Canada continued to revise its Trade-Marks Act, with a new draft of the legislation (formerly Bill C-56, see IPilogue coverage ) fast-tracked after Parliament reconvened in late 2013. The new draft (now ) contained provisions meant to bring Canada in line with multilateral anti-counterfeit agreements, and standardized some Canadian trade-mark terminology in an attempt to harmonize the Canadian lingo with terms in use abroad (owners of marks will soon trade in “goods” instead of “wares”, although the distinctive Canadian hyphen in “trade-mark” will remain).

Canada is likely to further integrate its trade with Europe through the Comprehensive Economic and Trade Agreement (), which will require modifications to protections for Geographical Indications (GIs). The increased protection this will afford to GIs may allow for protections for marks which are confusing with marks currently registered in Canada, leading to for Canadian owners.

In Europe, the European Union stopped plain packaging legislation similar to the anti-tobacco regime in Australia, claiming the regulation of packaging fell outside the scope of the Tobacco Products Directive (TPD). However, health concerns continued to drive revisions to packaging, meaning that the plain packaging debate is likely .

In the broader world of marketing and brand management, many Canadian brands went through important changes, with Research In Motion to the more recognizable brand of Blackberry, in order to “consolidate to a single brand identity.” The Internet and social media sites like Twitter continued to influence public perception of brands, though some firms were than others at making use of new media.

Copyright

November of 2013 marked the one-year anniversary of the amendments to the Copyright Act. The passing of the Copyright Modernization Act created significant debate among the many copyright stakeholders, including academics, lawyers, and students who, in addition to beginning in-depth analysis of the new legislation, continued to marvel over the significance of the copyright pentalogy.

2013 was also a year when American copyright law aligned with Canadian copyright law in a US case where, Leonard, an American Photographer, was successful in his copyright . ��The US District Court found that the licence agreement for use of Leonard’s photographs was limited to printed publications, and did not implicitly grant Stemtech the right to use the works on their website. This decision was consistent with the earlier Supreme Court of Canada’s decision in .

Perhaps the most troubling case for visual artists in 2013 was the “resolution” of the��, which questioned whether a property owner’s interests could prevent an artist from invoking their moral rights. In the case of 5pointz, that meant white washing the walls of a building complex that featured over 20 years of accumulated graffiti in advance of a planned demolition of the building to make way for multi-million dollar residential development. This case illustrated the limited role of moral rights in the US. By refusing to grant an injunction against the demolition of the 5pointz complex, the court gave a firm signal of their unwillingness to accept the argument that the destruction constituted damage to an artist’s reputation.

Ongoing issues concerned the copyright challenges presented by the evolving digital sphere. Here the presentation at Osgoode by , the President of Random House Publishing, highlighted some concerns for the future of the printed book in the digital world of copyright.

Moreover, in defending claims of copyright infringement with respect to its Google Library Project will illuminate the future of the printed page and its transition into the digital world. In the District Court for the Southern District of New 91��ɫ, Google adopted a fair-use defence, and obtained a favourable decision which found that the scanning and making available of snippets of over 20 million books to users without the authors’ authorization was not copyright infringement.

Even without precedential value in the Canadian court system, this case may provide groups with stronger arguments for future fair dealing claims associated with education and/or research attempting to align these with . Also, Google’s actions are sure to affect Canadian authors in some way since some of the scanned works are likely to have Canadian authors attached to them.

IP Osgoode in 2013

While the IP landscape bubbled with activity, so did IP Osgoode. ��2013 marked IP Osgoode’s fifth anniversary. During this milestone year, with the help of IP Osgoode staff and an army of eager students, the , the , and the at Osgoode Hall Law School continued with great success due in part to a number of exciting new collaborations. The IP Intensive program offered three new placements, The Canadian Broadcasting Corporation, Apotex Inc., and Cobalt Pharmaceuticals Company. We look forward to the fall of 2014, where we hope to forge new partnerships and add to the diverse array of placement organizations for the IP Intensive program. Now in its third year of operation, IP Osgoode’s Innovation Clinic in enjoying great success as it continues to expand its pro bono services and clientele base. Through IP Osgoode’s recent partnership with 91��ɫ’s , we hope to further extend our networks within 91��ɫ and the Greater Toronto Area.

As part of our IP Osgoode Speaker Series, we were pleased to feature the Honourable Justice Marshall Rothstein of the Supreme Court of Canada to discuss the and Douglas Pepper, the President of Random House Publishing, to discuss the . IP Osgoode also co-sponsored a visit from as a Genest Global Faculty and invited Professor Nabhan to teach a seminar course entitled “International and Comparative Copyright Law” for the fall term. ��IP Osgoode also spearheaded the creation of a new seminar course called “Commercializing IP” and welcomed Ed Fan and Loreto Grimaldi as course instructors for the winter 2014 term. In keeping with IP Osgoode’s mission to increase cross-disciplinary collaborations with faculties and organizations across 91��ɫ, Canada, and around the world, this new seminar course is open to students from both Osgoode and the at 91��ɫ.

IP Osgoode hosted two ground-breaking events in 2013. ����The first conference, entitled “”, was co-hosted with the . This full day conference focused on the various roles of student researchers in commercializing intellectual property and the policies adopted by various organizations and institutions with respect to intellectual property ownership and knowledge mobilization. ��Ontario Assistant Deputy Minister Bill Mantel and Sylvain Laporte, CIPO’s CEO, provided the keynote speeches.

IP Osgoode’s second notable event in 2013 was a full-day symposium entitled “”, which featured a number of esteemed speakers and explored the ’s novel UGC provision.

As 2014 unfolds, IP Osgoode aims to continue to drive a leadership role in the intellectual property law debates. We hope to hear from you and that will join us in this journey.

Top 10 most read IPilogue articles of 2013

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With contributions from on Patents, on Trade-marks, and on Copyright.

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At in Vancouver BC, Michael Hallatt resells marked-up and unmodified Trader Joe’s products purchased at retail price in Washington State Trader Joe’s locations. Currently, Trader Joe’s only operates in the United States and hold several registered trade-marks on . The mark is used to identify both the company itself, and its branded goods. Trader Joe’s also currently has two ��for retail grocery services in Canada.

In the��, Trader Joe’s alleged that Hallatt prominently displayed their mark in an attempt to pass as an authorized dealer of their products. Interestingly, in the wake of the trade-mark infringement claim made by Trader Joe’s, Hallat’s store now goes by _IRATE JOE’S with the tagline “Unauthorized, Unaffiliated and Unafraid”. On October 2^nd, a Seattle Washington court����the claim for lack of subject-matter jurisdiction, but allowed Trader Joe's to amend the claim under state laws.

Under Rule of the United States��Federal Rules of Civil Procedure,��a court can ��only if it is immaterial and appears to be made solely for the purpose of obtaining jurisdiction, or the claim is wholly immaterial or frivolous. In making this determination, the court unless the party mounting a jurisdictional challenge asserts facial or factual attacks on the claims. The court held that Hallatt failed to make a factual or facial attack but that nevertheless there was no basis for extra-territorial application of the ��in this case.

The Lanham Act confers broad power on the court to exert jurisdiction. To make this determination, courts must apply the .�� First, courts ask whether the actions complained of effect American foreign commerce. Second, whether this effect presents a cognizable injury under the Lanham Act. Third, the court must conduct a seven-factor analysis as to whether assertion of extra territorial authority is justifiable. To satisfy the first two parts of the test, a plaintiff must show only that there has been “some” effect on foreign commerce when construing all facts in their most favourable interpretation. In this case, all the alleged trade-mark infringement took place in Canada and there was no proof of economic harm in the United States.

Trader Joe’s failed to show an effect on American commerce that would warrant the application of the Lanham Act. ��The degree of conflict with foreign law or policy weighed against establishing jurisdiction because Trader Joe’s has two trade-mark applications in Canada and the infringement is wholly foreign. Hallatt’s permanent resident alien status and his frequent purchase trips to the US would likely be sufficient for establishing jurisdiction through the nationality factor. Third, Hallatt’s presence is not strong enough in the US to apply jurisdiction. Fourth, as wholly foreign acts, there was not a significant effect in the United States. (Even if there was some diversion of business or impact on the reputation of Trader Joe's, this factor still weighed against applying jurisdiction.) Fifth, Pirate Joe’s�� clearly purchased Trader Joe’s products at retail value to resell and it was unclear whether this was intended to harm Trader Joe's since it did not actually lose sales. As a result, it was was not necessarily foreseeable under the sixth factor that the actions would cause harm. Finally, the actions were clearly more significant in Canada than in the United States, since that is where the products were sold after being lawfully purchased in the US.��The court found that on the whole the seven factors supported not extending jurisdiction.

Until Trader Joe’s actually enters into the Canadian market they may have a difficult time preventing Hallat from selling their products at Pirate Joe's. To be successful in a claim in a Canadian court, Trader Joe’s would have to show actual use of the mark in Canada. Trader Joe's may have an argument that if their mark is displayed on a website accessed by Canadians it should be considered “used”��, though this has been a controversial point of law in recent times. (It is important to note that a mark displayed on a website is not�� “used” in Canada unless Canadians can����associated with the mark.) Currently, Trader Joe’s does not allow Canadians to purchase goods through their site and therefore may not pass the threshold for use in Canada. As time goes on, even with trade-mark applications, if the mark is not used ��in Canada the registration could be expunged. Moreover, with Pirate Joe's tagline "Unauthorized, Unaffiliated and Unafraid", I think it would be difficult to indicate consumer confusion in the face of such clear indications about the lack of association with Trader Joe's.

Despite the favourable ruling, Hallatt may still have difficulty stocking his shelves. Several Trader Joe's locations now , and Hallatt has already had to resort to sending others in to shop for him. ��That said, for the time being, fans of Pirate Joe’s can continue to sing “Yo ho ho and a bottle of all-natural apple juice!”

Allison McLean is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.��

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Hudson’s Bay objected to registration of the following design marks based upon its prior use and registration of various BAY and BAIE marks:

and

In 2010, the Trade-Marks Opposition Board sided with Beymen, finding, on a balance of probabilities, no reasonable likelihood of confusion between the above marks and those previously registered by Hudson’s Bay, “primarily because of the Mark’s inherent distinctiveness and the differences existing between the parties’ marks which outweigh the other factors in the present circumstances.”�� On February 5, 2013, Justice Hughes of the Federal Court released his reasons in and and partially reversed the holding of the Board.

In so doing, Justice Hughes applied the same test that the Board had, saying that the determinative issue was the likelihood of confusion between the trade-marks sought to be registered and the various BAY marks.�� Before the Board, The Bay had only evidenced copies of its various BAY registrations and nothing further.�� On appeal, however, it filed two further affidavits attesting to the extensive use and promotion of its BAY marks, and the state of the Register with respect to third party BAY marks.�� The nature and quality of this further evidence was considered by Justice Hughes to be significant, allowing him to consider the matter de novo instead of reviewing the Board decisions only on the basis of reasonableness.�� Justice Hughes also noted the Supreme Court of Canada decision in �� decided after the Board’s finding in this case as further support for the matter to be addressed de novo.

In assessing the likelihood of confusion, Justice Hughes followed the approach outlined by the Supreme Court in Masterpiece, namely what is the first impression in the mind of the casual consumer, somewhat in a hurry, with an imperfect recollection and without close examination.�� Justice Hughes specifically repeated the instruction of the Supreme Court that “[n]either an expert, nor a court, should tease out and analyze each portion of a mark alone. Rather, it should consider the mark as it is encountered by the consumer – as a whole, and as a matter of first impression.”�� He quoted the following from the Supreme Court:

[84]�������� However, considering a trade-mark as a whole does not mean that a dominant component in a mark which would affect the overall impression of an average consumer should be ignored: see esure Insurance Ltd. v. Direct Line Insurance plc, 2008 EWCA Civ 842, [2008] R.P.C. 34, at para. 45, per Arden L.J.�� This is because, while the consumer looks at the mark as a whole, some aspect of the mark may be particularly striking.�� That will be because that aspect is the most distinctive part of the whole trade-mark.�� In this case, contrary to the view of the expert, the most distinctive and dominant component of the marks in issue is in all cases the word “Masterpiece” because it provides the content and punch of the trade-mark.�� The word “Living” is bland by comparison.

There has always been an underlying tension between these two instructions of the Supreme Court - that a mark must be considered as a whole and as a matter of first impression, but yet that a dominant component should not be ignored – because to determine the latter necessarily involves, at least to some extent, deviating from the former.�� This tension is clearly evident on these appeals as Justice Hughes concludes at the outset that the essential part of the trade-marks sought to be registered is the word BEYMEN, and that the essential part of the Appellant’s registrations is BAY or BAIE.�� The result is that the analysis undertaken “is that of likelihood of confusion between BAY or BAIE and BEYMEN”, and not between the applied for design marks as a whole and each specific BAY registration.

Some have suggested that this approach to the confusion analysis, the identification and subsequent weight given to a dominant component, combined with Justice Hughes’ explicit and deliberate avoidance of “a slavish conformity to section 6(5)” of the Trade-marks Act, creates greater unpredictability in assessing the risks of confusion.�� However, in my view, the analytical approach undertaken by Justice Hughes is really no different than that which been undertaken for more than a century.�� Perhaps Justice Hughes was more clearly explicit in stating that there is no “rigorous formula” to determine likelihood of confusion, but that does not change the test, it merely acknowledges that this is nothing more than a “judicial determination of a practical question of fact” (to quote Justice Ritchie from ).�� In other words, it is a question that has always been answered by ordinary common sense with all its inherent unpredictability.

Kelly Gill is a partner with Gowling Lafleur Henderson LLP, a graduate of Osgoode Hall Law School, author of Fox Canadian Law of Trade-marks and Unfair Competition, appeared before the SCC on behalf of the appellant in Masterpiece, and sits on the IP Osgoode advisory board.

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2012 was an action-packed year in the world of intellectual property law. There were flurries of reports, decisions, and new legislation that confronted many core principles of IP law, priming 2013 as a year where the law will continue to move into new, uncharted territory.

2012 was an exciting year for IP Osgoode, where we celebrated our fourth birthday We welcomed Michelle Li as the IP Osgoode Coordinator and a vibrant mix of students to work on our many projects. It was another successful year for our IPilogue and growing our various . As part of our IP Osgoode Speaker Series we featured .�� The year appropriately ended with two distinguished lectures, by Justice Marshall Rothstein (), and ” by Justice Roger Hughes.

We look forward to 2013, a year for strengthening our existing partnerships and forging new ones, cultivating our current projects and fostering new initiatives, and most importantly, evolving and growing to better serve our membership.

Patents

In patent law, 2012 was a year of Viagra, cell phone wars, and a continuation of the American debate on the patent-eligibility of isolated human genes.

In Canada, the SCC’s ruling in the case of affirmed the quid pro quo basis of Canadian patent law, while in the United States, Apple and Samsung closed a lengthy chapter in their battle for American market share.�� In August, a jury in the District of Northern California found and awarded the American company $1.05B in damages.�� Two weeks before Christmas, both parties wherein presiding judge Justice Lucy Koh .�� One week later, Koh J issued two rulings that (1) Apple’s request for an injunction on the sale of Samsung’s infringing devices and (2) Samsung’s request for a new trial on the basis of jury misconduct.�� Koh J is expected to issue additional rulings on the post-trial hearing in early 2013.

2012 also saw the continuation of the over the patent eligibility of isolated genes in America.�� In the US Court of Appeals for the Federal Circuit held that isolated genes are eligible for patent protection even in light of the USSC’s ruling in .�� In November, the USSC granted AMP’s request for appeal but has indicated that it will confine its discussion on the question of the patent-eligibility of human genes. The USSC is expected to rule on this matter in the summer of 2013.

Across the pond, the European Council reached an agreement that has been described as the final step of and the High Court of Justice of England & Wales saw that ultimately ruled in favour of Samsung.

Trade-marks

2012 saw many important legal developments in the field of trade-marks.

In an important decision for foreign entities with registered but unused marks in Canada, the arbitrator in the found that “once a trade-mark is registered, its owner has rights in the mark from the date of the [trade-mark] application”.

2012 also saw CIPO beginning to accept applications for . This crucial CIPO decision paves the way for the modernization of the Canadian trade-mark regime while facilitating the adoption of international standards and trade opportunities.

2012 was a year of landmark decisions for the fashion and entertainment industry as well. , and Christian Louboutin had his , while YSL managed to keep his own entirely red shoe in the market. Also related to the fashion industry, attempt to use the mark “fruit”: the mark “fruit” is not merely a variation of the mark “fruit of the loom,” but a distinctive mark on its own. Global brands will find this decision relevant in their fights against similarly sounding competitors.

In the tobacco industry, , while in the , a single colour was found to make a difference. Meanwhile, in Florida, a business name was invalidated as a trade-mark .

Lastly, 2012 was an important year for internet too. In June, and in October, the organization held its .

Copyright

In many ways, 2012 was the year of copyright in Canada. The Supreme Court of Canada’s (SCC) and , the Copyright Modernization Act were the main protagonists Debates in related areas of privacy law were also present.

Bill C-11 was a constant source of discussion, and had been a long-time coming for the Copyright Act, which with challenges posed by the digital age. In May, we saw the in Parliament. In June, , bringing legislative changes to distribution rights, the doctrine of fair dealing, statutory damages, performer’s rights, and many other aspects of digital file sharing. Canada was not the only country dealing with modernizing copyright reform in 2012, as the .

In July, one of the Canadian legal news events of the year occurred, with the SCC releasing , dubbed as the copyright “pentalogy.” IP Osgoode delivered extensive analysis of each of the five judgments and their influence on Canadian copyright law, with summarizing and linking to each article. The five cases, predating the implementation of the Copyright Modernization Act, attempted to clarify the definitions of “communicate the work to the public by telecommunication,” “sound recording,” and fair dealing for the purposes of “private study” and “research.” These cases sought to provide clarity regarding digital streaming and further evolved the concept of fair dealing.

Internationally, 2012 saw privacy law thrust to the forefront, with ), the American anti-digital piracy bills, the suspension of a , and , a similar European bill. In Canada, our privacy legislation, the Personal Information Protection and Electronic Documents Act (PIPEDA) was criticized as being . Canadian privacy commissioner Vic Toews was also a frequent target of media criticism, as a social media campaign brought Toews’ personal life to the forefront as a form of protest against his , which culminated with Bill C-30, a proposed online surveillance bill. Later in the year, as support for increasing Internet surveillance in order to modernize the Criminal Code of Canada.

In addition to the digital privacy issues that arose in 2012, many developments occurred with respect to computer software internationally. in Canada and the States, in Europe, over operating systems, was clarified in Ontario, and in an Australian case concerning BitTorrent file sharing.

Later developments included European , debates about , public hearings about , and music icons facing copyright infringement suits ( and ).

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Please note: Justice Hughes' lecture was recorded and this article will be updated to provide a link to that recording once it is made available online.

, founder and Director of IP Osgoode provided the introduction.�� She highlighted Justice Hughes' notable influence on intellectual property law and policy both before and after his appointment to the bench.�� To conclude her introduction, Professor D'Agostino read an excerpt from the chapter that Justice Hughes contributed to : “Asking how litigation begins is rather like asking how persons fall in love.�� The answer is that there are all sorts of ways, good, bad and indifferent”.

On that note, Justice Hughes proceeded to paint a colourful portrait of the process a judge goes through in arriving at a judgment from soup to nuts: everything from organizing a case pre-trial to sitting down in a quiet office to think and finally write the reasons for judgment.

The process begins in pre-trial, months before a case is to be heard.�� At this stage a judge is responsible for organizing the case, identifying and reducing the number of contentious issues, and forging agreements on the facts wherever possible.

The organizational responsibilities of the judge continue with the trial.�� Evidence, exhibits, issues, and witnesses all need organization.�� Especially important is dealing with expert witnesses.�� Justice Hughes��is a pioneer in this area, using a practice that is known as "hot tubbing", which involves sitting opposing experts in the witness box together to encourage them to arrive on agreed opinions.�� The judge must also hear the lawyers' oral arguments and read their associated facta.�� Justice Hughes advised that an effective written submission should be no more than thirty pages.

Once a trial has concluded, the judge's real work begins: reducing the case to reasons for judgment and working to distill those reasons into a written document.�� Essential to this is process is, as Justice Hughes puts it, considering the "ask": the remedies that are being sought by the parties.�� To get to the "ask", one must first try to get all of the facts right by considering the evidence according to the appropriate burden where there is a dispute.�� Most importantly the legal issues in the case must be carefully sorted out, and the applicable law must be clarified.�� Finally, the law is applied and the remedies considered.�� Justice Hughes declared that he prefers creative remedies that do the "least harm” while achieving an appropriate result.

Justice Hughes then led us through a typical case for each of patent, trade-mark, and copyright.�� While going over the most common issues in each type of case, he placed special emphasis on the various legal standard personas that a judge must put himself in the position of to arrive at a conclusion.�� When assessing a patent, the perspective is that of a person "skilled in the art"; for trade-marks, it is the "average consumer somewhat in a hurry"; for copyright, it is the somewhat more nebulous "beholder" of a work.

Having gone through the process of hearing a case, a judge then sits down in a quiet office to think about the case.�� Justice Hughes intimated that a decision is written with the conclusion in mind and intended for several audiences: consumers, the parties, their lawyers, the public, and the appeals courts.

As promised, some tips for both new and experienced advocates were then offered based on Justice Hughes' thirty-seven years of experience as a lawyer and seven years on the bench. At the top of the list was to “keep it as simple as possible, but no more simple than possible”. ��Justice Hughes advised that presenting your three best issues while being polite, pleasant, and “folksy” rather than mechanical, is more persuasive and likely to convince the judge to grant your "ask". ��He also explained that knowing your case and organizing it logically is essential, as is “not sweating the small stuff”, which allows for an agreement in principle on as much as possible and helps narrow a case to its essential issue. Justice Hughes, tongue-in-cheek yet practical, also reminded us of ��“Rule 13”: "don't piss off the judge".�� Last but not least, he wisely advised us to be truthful to the client and respectful to both the opponent and the judge.

The lecture was followed by a lively question and answer period in which questions ranged from queries about the above-mentioned “hot tubbing” of experts to the challenges faced by teachers and students in fine arts programs when it comes to protecting their intellectual property rights. Finally, Justice Hughes offered some advice to law students and recent graduates looking for work in a crowded market: be enthusiastic��to set yourself apart.

Philip Poles is a graduate of Osgoode Hall Law School.

The post IP Osgoode Speaker Series: Justice Roger Hughes - Advocacy Skills and IP: Observations from the Bench appeared first on IPOsgoode.

Walmart, Costco, Best Buy, Gap, Old Navy and Guess have against the Quebec government in response to fines issued by the (OQLF). The fines were issued pursuant to the (hereby referred to as the Charter) – a piece of Quebec legislation designed to promote the use of French in everyday life for its residents. The fines for contravening any provision in the Charter can range from $1500 to $20000 – a hefty sum that can be doubled for subsequent offences (Section 205 of the Charter) and can result in the revocation of a company’s “francization certificate” (a designation given by the OQLF entitling the company to certain provincial tax benefits and to enter into contracts with the Quebec government).

The OQLF stated that these companies were contravening Section 63 of the Charter which requires businesses operating in Quebec to have French names. Alternatively, companies could include a descriptive slogan or line in French in order to comply with this requirement. While a number of businesses operating in Quebec have complied with the Charter by renaming themselves completely (such as KFC – known as PFK in Quebec) or by adding French to their signage (Starbucks is known as Café Starbucks Coffee), the 6 retailers listed above have refused to do so and have instead taken the issue to the courts to decide.

The fines come following done by the OQLF earlier this year, in which that they would “initiate other steps against businesses that refuse to post their trade name in compliance with the Charter [of the French Language].” Previous to these recent fines, the OQLF rarely went after trade names and much of the case will likely turn on the interpretation of the Quebec Regulation Respecting the Language of Commerce and Business (the Regulation). Section 25(4) of the Regulation provides that “a recognized trade-mark within the meaning of the Trade-arks Act” can be shown on public signs, posters and commercial advertising exclusively in a language other than French, thereby being an exception from Section 63 of the Charter.

However, there has been some argument over whether a trade name – the name used by a business for commercial purposes – can be considered to be included in the reference to “trade-mark” in the Regulation. As quoted by the Quebec Superior Court in (Procureur général), author Harold Fox (in The Canadian Law of Trade Marks and Unfair Competition) describes the differences and interactions between the two concepts as:

"The distinction between trade names and trade marks lies mainly in the fact that a trade-mark is used in association with vendible commodities or services while a trade name is more properly used as applied to the goodwill of a business… But it must be remembered that trade names are often used in association with vendible commodities and services and that trade-marks, just as much as trade names, are a constituent part of the goodwill of a business."

As some of these countries operate on an international scale, it is easy to understand why they are so resistant to some of the provisions that are now being strictly enforced by the OQLF in Quebec. The trade name of these companies and their associated logos are very closely related to the products and services that they provide to customers, and therefore, the goodwill that those generate toward the company itself. While it may seem fairly innocuous for Walmart to alter their signs to say “Le Magasin Walmart” (a possible compliant alteration), the costs of such a change could, in actuality, be quite large. These corporations spend massive amounts of money to design logos to attract customers and such a change could interfere with the look and feel of the chosen branding. There is no evidence that foreign countries have forced big name retailers to alter their signage in order to fit with the culture; should the Quebec government be so demanding of these corporations to change for such a relatively small market?

On the other side of the coin is the cultural sustainability that the OQLF and the Charter are attempting to maintain. French culture has been a defining point for Canadian culture and history – a fact recognized and referred to in many Supreme Court decisions. Should this not have any bearing on how these large companies do business in Quebec as a francophone province, if at the very least out of respect for the cultural heritage of our nation?

As the issues at stake are important to the operation of business in Canada and related to our French-Canadian culture and heritage, it is likely that the trial decision will be appealed. Regardless of the outcome at the end of the proceedings, will the businesses be left wondering if the money spent litigating these issues would have been better spent on redesigning their corporate branding? Only time will tell.

Adam Del Gobbo is a JD Candidate at Osgoode Hall Law School.

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